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Federal Circuit Sitting En Banc Rules PTAB’s Time Bar Determinations Can Be Appealed, Overuling Achates

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Patent Owners wishing to challenge a PTAB decision to institute an Inter Partes Review, where the petition was alleged to be time-barred under the one-year statutory window, can now appeal that ruling to the Federal Circuit. That is the holding of the en banc majority in an opinion authored by Judge Reyna today in Wi-Fi One, LLC v. Broadcom Corp. The ruling overrules the Federal Circuit's 2015 contrary decision in Achates Reference Publishing, Inc. v. Apple Inc.

At issue was the one year time bar in 35 U.S.C. § 315(b), which states that an IPR "may not be instituted if the petition . . . is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." In this case, Patent Owner asserted that Broadcom was in privity with various companies that had been sued for infringement of the disputed patents more than one year before Broadcom's petition was filed. The PTAB panel faced with the issue disagreed, denied discovery to the Patent Owner on the issue, and instituted the IPR - ultimately finding some of the challenged claims unpatentable. On appeal, the original Federal Circuit merits panel (which included Judge Reyna, who concurred in the panel's result) affirmed, concluding that appellate review of the time-bar issue was foreclosed by Achates, and agreeing with the PTAB on the merits of its patentability determination.

The court subsequently agreed to hear the case en banc, limited to the question of whether judicial review should be available for a patent owner to challenge the PTO's determination that the petitioner satisfied the timeliness requirement in section 315(b). In a 9-4 decision, the en banc court answered that question: "Yes." In particular, Judge Reyna's majority opinion adopts the thrust of his concurring opinion in the original panel decision. The en banc majority concluded that the "No Appeal" provision of 35 U.S.C. § 314(d), which precludes appellate review of determinations by the PTO Director to institute an IPR does not apply to decisions regarding whether a petition has complied with the time-bar of section 315(b). The majority also distinguished the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, which had held that section 314(d) barred judicial review of certain "mine-run" claims involving the PTO's decision to institute inter partes review. Instead, the majority concluded that section 315(b) "limit[]s the agency's authority to act under the IPR scheme" and therefore is not subject to Cuozzo's bar on judicial review. The court did not resolve the merits of the underlying appeal, however, and simply remanded to the merits panel for reconsideration.

The court's en banc decision raises several interesting questions that will need to be answered in future cases. For instance, it is unclear when the patent owner will be permitted to appeal from a decision instituting an IPR where a time-bar is at issue. Will these appeals be permitted on an interlocutory basis, or must they await a final decision from the Board? Frequent interlocutory appeals from institution decisions would threaten to delay the resolution of inter partes reviews, contrary to the statutory congressional mandate of completing these reviews within one year of institution. However, requiring the Patent Owner to wait until a final written decision to appeal risks creating a cloud over the patent if it is found invalid in an IPR that is ultimately found to have been procedurally time-barred.

Second, it is not clear if a petitioner will be able to seek review of a petition that is denied on the basis of the time bar. The question raised in Wi-Fi One was limited to appeals by Patent Owners only, and some language in the majority opinion might be read to suggest that a non-institution decision is still subject to the section 314 bar on judicial review.

Third, the en banc court did not address the PTAB's decision to deny discovery to the Patent Owner during the IPR regarding the time-bar issue. Without such discovery, it may be difficult for Patent Owners to introduce evidence that a time-barred defendant is a privy of the IPR petitioner, or is otherwise a real party in interest to the IPR petition being challenged. The prior merits panel did not address this issue, concluding that the PTAB's discovery ruling was insulated from review by section 314 and Cuozzo. Notably, Judge Reyna, in his panel concurring opinion, noted that "Wi-Fi One has neither shown Broadcom to be in privity with the [litigation defendants], nor a real party in interest in [that] litigation." Thus, it is possible that the panel on remand will simply re-affirm the PTAB's conclusions on the merits regarding timeliness of the petition and patentability of the claims. If not, however, the panel would likely need to address the PTAB's discovery rules, an area that the Federal Circuit has so-far left underdeveloped.

The resolution of each of these issues has the potentially to significantly impact PTAB practice and the relationship between PTAB proceedings and related district court litigation. The Federal Circuit appears to have left these issues open for further development in future cases, and parties with an interest in PTAB proceedings would be well-advised to closely monitor developments in this area.

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